Improving the effectiveness and efficiency of trademark legislation in the Member States of the European Union was, from the very start, one of the overt goals of the EU trademark reform. The situation in the EU is that of parallel coexistence between Community trade marks (CTMs) and national trademarks registered at EU Member States’ level, with the various national systems showing substantial discrepancies both with respect to the CTM and with respect to each other. The EU legislators aimed at harmonizing the trademark systems but also at modernizing them, to reflect the significant economic, social and technological changes which occurred since the last legislative effort 20 years ago.

Administrative procedures for revocation or declaration of invalidity (cancelation proceedings) and opposition proceedings were naturally considered in the reform as they play a key role in the protection of trademarks. They serve as trademark owners’ first and most accessible tools to fight violations of their exclusive rights.

The Situation in EU Member States Before the Reform
According to the outcome of the study of the Max Planck Institute (MPI) ordered by the European Commission to assess the state of the trademark systems, in 2010, opposition proceedings were available, or were to be available soon, in all European Union Member States with the exception of Malta. Substantial differences in the various national systems were identified in connection with the possible grounds of opposition and the average timing of the proceedings from their start to the first instance decision. In particular, ten national trademark Offices accepted both absolute grounds and relative grounds of opposition while 13 Offices accepted just relative grounds, with yet more differences concerning the specific relative grounds allowed in the various jurisdictions. Time wise, opposition proceedings could last from an awe-inspiring three months to a mind-boggling five years.

Administrative cancelation proceedings were available in 13 countries, while in the remaining 11 countries, trademark users had to resort to legal actions before the courts in order to have an infringing trademark canceled. Concerning the grounds for cancelation, the MPI’s study simply noted that the answers to the questionnaire proposed to the Members States had been “rather abstract” and did not allow direct comparisons. As with opposition proceedings, the durations of the various administrative and court cancelation proceedings were extremely different from country to country.

Today, six years after the MPI’s study, not many changes have occurred in the various national systems: Malta continues to be the only country not to have opposition proceedings and Sweden has implemented administrative revocation proceedings. The new Swedish procedure can only be started on the basis of non-use, and with the agreement of the proprietor of the registered trademark; if the proprietor decides to object to the cancelation request, upon its request the matter may be referred to the district court. Lastly, in 2013, a new country, Croatia, has joined the European Union. Croatia has both opposition proceedings (based on relative grounds only) and administrative cancelation proceedings.

New Administrative Procedures Foreseen in the Reform
In this context, the EU legislators decided to consider the introduction of new mandatory administrative procedures in all EU Member States. The reformed Trade Marks Directive (TMD or Directive) addresses the issue of opposition and cancelation proceedings at Recital 38, according to which:

For the purpose of ensuring effective trade mark protection, Member States should make available an efficient administrative opposition procedure, allowing at least the proprietor of earlier trade mark rights and any person authorised under the relevant law to exercise the rights arising from a protected designation of origin or a geographical indication to oppose the registration of a trade mark application. Furthermore, in order to offer efficient means of revoking trademarks or declaring them invalid, Member States should provide for an administrative procedure for revocation or declaration of invalidity within the longer transposition period of seven years, after the entry into force of this Directive.

Member States shall provide for an efficient and expeditious administrative procedure before their offices for opposing the registration of a trade mark application on the grounds provided for in Article 5.

The administrative procedure referred to in paragraph 1 of this Article shall at least provide that the proprietor of an earlier trade mark as referred to in Article 5(2) and Article 5(3)(a), and the person authorised under the relevant law to exercise the rights arising from a protected designation of origin or geographical indication as referred to in Article 5(3)(c) shall be entitled to file a notice of opposition. A notice of opposition may be filed on the basis of one or more earlier rights, provided that they all belong to the same proprietor, and on the basis of part or the totality of the goods or services in respect of which the earlier right is protected or applied for, and may be directed against part or the totality of the goods or services in respect of which the contested mark is applied for.

The parties shall be granted, at their joint request, a minimum of two months in the opposition proceedings in order to allow for the possibility of a friendly settlement between the opposing party and the applicant.

The reformed Directive requests that opposition procedures be “efficient and expeditious.” It will be interesting to see how the various national systems will translate that into action. Possible bases for opposition include earlier trademarks (i.e., CTMs, national trademarks or in any case trademarks registered under international arrangements having effects in Member States, and trademarks which are well known in Member States in the sense of Article 6 bis of the Paris Convention), as well as designations of origin and geographical indications, thus harmonizing the issue of conflicts between these types of intellectual property rights. In addition, the Directive expressly obliges Member States to allow oppositions against identical or similar trademarks covering goods or services which are not similar to those covered by the earlier trademark, if the earlier trademark enjoys a reputation. Lastly, the national procedures will also need to provide the possibility for the parties, at their joint request, to obtain a minimum of two months to negotiate amicable settlements.

By not only compelling Member States to make their opposition proceedings quick and effective, but also dictating the minimum opposition bases and even procedural elements, Article 43 marks a substantial departure from the version of the Directive currently in effect, which leaves the Member States “free to fix the provisions of procedure concerning the registration, the revocation and the invalidity of trade marks acquired by registration” and to decide whether to “have an opposition procedure or an ex-officio examination procedure or both” (Recital 6).

Regarding new administrative cancelation procedures, the departure from the past is even more radical when Article 45 is taken into consideration given that, as mentioned above, many Member States do not provide for such proceedings. The creation of administrative cancelation proceedings was highly debated among Member States, some of them being very reluctant about the idea. INTA strongly advocated in favor of office-based procedures in all EU Member States as a mandatory addition to long and costly judicial proceedings. Despite being an obvious important area for harmonization in the field of procedural law, administrative cancelation procedures were so controversial that they were left for negotiation until the very end of the legislative process. The result is the compromise text of Article 45, which reads as follows:

Without prejudice to the right of the parties to appeal to the courts, Member States shall provide for an efficient and expeditious administrative procedure before their offices for the revocation or declaration of invalidity of a trade mark.

The administrative procedure for revocation shall provide that the trade mark is to be revoked on the grounds provided for in Articles 19 and 20.

The administrative procedure for invalidity shall provide that the trade mark is to be declared invalid at least on the following grounds: (a) the trade mark should not have been registered because it does not comply with the requirements provided for in Article 4; (b) the trade mark should not have been registered because of the existence of an earlier right within the meaning of Article 5(1) to (3).

The administrative procedure shall provide that at least the following are to be entitled to file an application for revocation or for a declaration of invalidity:

(a) in the case of paragraph 2 and paragraph 3(a), any natural or legal person and any group or body set up for the purpose of representing the interests of manufacturers, producers, suppliers of services, traders or consumers, and which, under the terms of the law governing it, has the capacity to sue in its own name and to be sued;

(b) in the case of paragraph 3(b) of this Article, the proprietor of an earlier trade mark as referred to in Article 5(2) and Article 5(3)(a), and the person authorised under the relevant law to exercise the rights arising from a protected designation of origin or geographical indication as referred to in Article 5(3)(c).

An application for revocation or for a declaration of invalidity may be directed against a part or the totality of the goods or services in respect of which the contested mark is registered.

An application for a declaration of invalidity may be filed on the basis of one or more earlier rights, provided they all belong to the same proprietor.

Article 45 expressly indicates the possible grounds for cancelation, which consist of lack of use for a period of at least five years, acquired generic or misleading character, all absolute grounds for refusal or invalidity and conflicts with earlier identical or similar trademarks, including trademarks covering goods or services which are not similar to those covered by the earlier trademark, if the earlier sign enjoys a reputation.

Recently, when opposition proceedings were introduced into national legislations which did not include them before, as in Italy in 2011, this led to a substantial step forward in the field of intellectual property protection. The same can certainly be envisioned for the introduction of administrative cancelation proceedings.

Next Steps / What Trademark Owners Should Know
When the Member States where only cancelation actions in court are now available finally implement administrative cancelation procedures, trademark owners might want to make sure they start using their trademarks in the concerned territories, as the risk of revocation will of course increase dramatically. At the same time, in these countries trademark owners will be in a position to rely on a powerful yet affordable tool to enforce their protection strategies, as cancelation actions are often used as defenses to talk counterparties into amicable settlements.

For better or worse, it looks like these changes will force trademark owners to rethink their strategies.

Administrative opposition procedures can be expected in all EU Member States by January 14, 2019 (Malta being the last country without it). However, users will need to be more patient to get administrative cancelation proceedings, since EU Member States have until January 14, 2023, to implement them. This unfortunately long transition period is the result of the compromise found by the EU legislators.

INTA will carefully monitor the transposition of the Directive in EU Member States’ national legislation and support European national offices in implementing these administrative procedures.